Patent owners have long known that making consistent arguments during IPRs and in district court litigation is critical to preserve credibility. The Federal Circuit recently took that a step further by holding that patent owners can be prevented from making arguments in district court that contradict their arguments in an IPR. More so than ever, patent owners must watch what they say during an IPR.
Topics: Patent Owners
IPR proceedings are formal administrative adjudications subject to the procedural requirements of the Administrative Procedure Act (APA). One such requirement is that “[p]ersons entitled to notice of an agency hearing shall be timely informed of … the matters of fact and law asserted.” In Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2013), the Federal Circuit interpreted this to bar the PTAB from changing theories in the middle of an IPR trial without giving reasonable notice of and an opportunity for the parties to respond to the new theories. The court left unresolved, however, just how much notice and how much of an opportunity to respond the APA requires. A recent Federal Circuit decision gives some clues as to how the court will resolve those open questions.
As one of the key phrases in both the pre- and post-AIA versions of § 102, what constitutes a prior art “printed publication” is a significant question in many patent validity challenges. The Federal Circuit has wrestled with the question since the court was created in 1982. However, despite its much shorter history, the PTAB likely has issued more decisions addressing this question than any other forum. Given the volume of guidance from the PTAB, petitioners who ignore what the PTAB thinks a printed publication is do so at their own peril.
As we’ve written before, notwithstanding statutory limits restricting IPR challenges to novelty and obviousness, Section 112 challenges are possible in an IPR. In several proceedings, petitioners have asserted references that have required the Board to determine whether an earlier filing supports the challenged patent’s claims. The Board generally has addressed these issues at the institution stage. However, a recent decision involving Kyle Bass and his Coalition for Affordable Drugs demonstrates the Section 112 analysis may not be fully resolved until the trial stage, where it can play a determinative role.
The discovery of an optimum value of a “result-effective variable” in a known process is ordinarily considered within the skill of the art and obvious. But, if a patent owner shows that optimizing the variable resulted in benefits with a magnitude unexpected by one skilled in the art, the optimized variable may be found nonobvious, as in Coalition For Affordable Drugs v. Biogen Idec Inc. (IPR2015-01993).
If a patent claim recites a range of 2-6 units, and a prior art reference recites a range of up to 4 units, do those two ranges overlap such that the patent claim is not novel? If so, how important are the ranges when it comes to establishing the novelty of the claim, and whose job is it to make that argument? These questions of overlapping ranges arose in Dermira, Inc. v. Purepharm, Inc. (IPR2015-01593). In this IPR decision, the PTAB affirmed that when a reference discloses an overlapping range with the challenged patent’s claims, the patent holder has the burden of showing the criticality of the claimed range to establish novelty.
Your IPR petition argues that a patent is obvious—but will those arguments even be fully considered? A recent decision in Affordable Drugs VII v. Pozen Inc. emphasizes the importance of providing evidence-based arguments within the appropriate documents that inform the Board’s investigation.
As previously discussed, we recently led the first successful defense against an IPR on the basis of sovereign immunity. Already, two other state universities are seeking dismissal of IPRs on that same basis: NeoChord v. University of Maryland (IPR2016-00208) and Reactive Surfaces v. Toyota (IPR2016-01914 & IPR2017-00572). As patent owners consider whether to assert the sovereign immunity defense to IPR, they should keep in mind several key lessons we found useful.
Topics: Sovereign immunity
Wolf Greenfield recently opened a new frontier for public entities with patents challenged in IPR by securing dismissal of two IPRs on the basis of sovereign immunity. The decision, which is the first to apply sovereign immunity as a defense to IPR, is particularly significant to public universities with many patents—and those who would challenge those patents in IPR. Though questions remain unanswered, the decision is disrupting the practice of IPRs.
Topics: Sovereign immunity
An IPR petitioner may, by request, and at the PTAB’s discretion, join another party’s prior filed IPR . A petitioner may seek to join an IPR to avoid the bar to filing more than one year after service of a complaint alleging infringement or to ensure the petitioner can continue its IPR if the parties to the prior filed IPR settle. If the petitioner’s challenge is substantially the same as that in the earlier IPR, it weighs in favor of joinder . Parties often copy the petitions from prior filed IPRs to facilitate joinder.